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Generic Top Level Domain Name (gTLD) Decisions |
Marty Taylor Homes, Inc. v. JNPR
Management
Claim
Number: FA0411000366170
Complainant is Marty Taylor Homes, Inc. (“Complainant”),
represented by John C. McElwaine, of Nelson Mullins Riley & Scarborough, LLP, PO Box 1806, Charleston, SC 29402. Respondent is JNPR
Management (“Respondent”), 54470 Bernkastel, Kues, Kues 53127, GERMANY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <martytaylorhomes.com>, registered with Onlinenic,
Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
17, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 17, 2004.
On
November 18, 2004, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <martytaylorhomes.com> is
registered with Onlinenic, Inc. and that Respondent is the current registrant
of the name. Onlinenic, Inc. has verified that Respondent
is bound by the Onlinenic,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties
in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
November 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 13, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing
contacts, and to postmaster@martytaylorhomes.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 22, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed John
J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules")
"to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <martytaylorhomes.com>
domain name is identical to Complainant’s MARTY TAYLOR HOMES mark.
2. Respondent does not have any rights or
legitimate interests in the <martytaylorhomes.com> domain name.
3. Respondent registered and used the <martytaylorhomes.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
builder of custom residential homes and additions in the York County and Rock
Hill regions of South Carolina.
Complainant began doing business under the MARTY TAYLOR HOMES mark in
February 2000 and has used the mark continuously in commerce
ever since.
Complainant has
spent a significant amount of time and money advertising and promoting its
MARTY TAYLOR HOMES mark through various
channels, including print media,
television, public signage and directories.
As a result, Complainant has developed positive goodwill and recognition
in South Carolina.
In early 2002,
Complainant registered the <martytaylorhomes.com> domain name and
used it to direct Internet users to its company homepage. Without realizing it, Complainant failed to
renew the domain name registration, and Respondent immediately registered the
domain name
on June 26, 2004.
Respondent’s domain name resolves to commercial websites featuring
various pornographic material.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted
in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed representations
pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate
pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain
name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Registration of
a mark with a governmental authority is unnecessary for a complainant to establish
rights in a mark if a common law
mark has been established. See McCarthy on
Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service
mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark
or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not
require “that a
trademark be registered by a governmental authority for such
rights to exist”).
Complainant
has established rights in the MARTY TAYLOR HOMES mark through ownership of a
common law mark. Complainant established
that through Complainant’s long-term
commercial use of the mark since February 2000, Complainant and Complainant’s
mark have acquired
secondary meaning and become distinctive of Complainant’s
goods and services. Moreover,
Complainant previously used the disputed domain name in conjunction with its
business. Thus, Complainant has
established secondary meaning in the MARTY TAYLOR HOMES mark through its continued
and exclusive use for nearly
five years. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary
meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On
account of long and substantial use of the said name [<keppelbank.com>]
in connection
with its banking business, it has acquired rights under the
common law.”); see also BroadcastAmerica.com,
Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has
common law rights in BROADCASTAMERICA.COM, given extensive use of
that mark to
identify Complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition
with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services); see also Am. Anti-Vivisection Soc'y. v. "Infa
dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding
that the fact that Complainant held the domain name prior to Respondent’s
registration,
as well held a pending trademark application in the mark,
evidences rights in the domain name and the mark therein contained).
Respondent’s <martytaylorhomes.com>
domain name is identical to Complainant’s mark because it incorporates
Complainant’s mark in its entirety and merely deviates with
the addition of the
top-level domain “.com.” Incorporating Complainant’s mark in its entirety with
the mere addition of a top-level
domain renders a domain name identical to a
Complainant’s mark with regard to Policy ¶ 4(a)(i). See Fed’n of
Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark
GAY
GAMES); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY
BY
VICTORIA mark); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of complainant’s reasonable allegations and inferences as
true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make reasonable
inferences
in favor of a complainant and accept complainant’s allegations as
true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that Respondents’ failure to respond can be construed as an
admission that they have no
legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known
by the domain name prior to
registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Respondent is
not using the disputed domain name in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The fact that Respondent’s domain name is
identical to Complainant’s mark and diverts Internet users to commercial
websites featuring
explicit and pornographic material is evidence of
Respondent’s lack of any rights or legitimate interests in the disputed domain
name. See ABB Asea Brown
Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating
that the fact that the “use of the disputed domain name in connection with
pornographic
images and links tarnishes and dilutes [Complainant’s mark]” was
evidence that Respondent had no rights or legitimate interests in
the disputed
domain name); see also Target Brands, Inc. v. Bealo Group S.A.,
FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (“[m]isdirecting Internet traffic by
utilizing Complainant’s registered mark [in order
to direct Internet users to
an adult-oriented website] does not equate to a bona fide offering of goods or
services . . . nor is
it an example of legitimate noncommercial or fair use of
a domain name . . . Respondent was merely attempting to capitalize on a
close
similarity between its domain name and the registered mark of Complainant,
presumably to gain revenue from each Internet user
redirected to the
pornographic website.”).
Moreover, the
fact that Complainant once held the registration for the <martytaylorhomes.com>
domain name and that Respondent immediately registered the domain name upon
expiration of Complainant’s registration is further evidence
that Respondent
lacks any rights or legitimate interests in the domain name pursuant to Policy
¶ 4(a)(ii). See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that Complainant’s prior registration of the same domain name is a
factor in considering
Respondent’s rights or legitimate interest in the domain
name); see also Tercent
Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the
Complainant’s domain name, within 24 hours of its lapse, weighs strongly in
favor of
a finding that Respondent has no rights or legitimate interests in the
disputed domain name”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is capitalizing on
the goodwill of the MARTY TAYLOR HOMES mark by using the disputed domain name
to divert Internet users
to commercial pornographic websites. Since the disputed domain name contains
Complainant’s mark, a consumer searching for Complainant would become confused
as to Complainant’s
affiliation with the resulting websites. Therefore, Respondent’s opportunistic use of
the disputed domain name represents bad faith registration and use pursuant to
Policy
¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when
the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site
to its own
website for commercial gain).
Furthermore, Respondent’s
tarnishing use of the <martytaylorhomes.com>
domain name to redirect Internet
users to an adult-oriented website is further evidence of bad faith pursuant to
Policy ¶ 4(a)(iii). See MatchNet
plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the
association of a confusingly similar domain name with a pornographic website
can
constitute bad faith); see also
Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that
absent contrary evidence, linking the domain names in question to graphic,
adult-oriented
websites is evidence of bad faith).
Moreover, the fact that Complainant once
held the registration for the <martytaylorhomes.com> domain name
and that Respondent immediately registered the domain name upon expiration of
Complainant’s registration is further evidence
that Respondent has registered
and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30,
2000) (finding that where the domain name has been previously used by
Complainant, subsequent
registration of the domain name by anyone else
indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of Complainant’s failure to renew a domain name).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <martytaylorhomes.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: January 5, 2005
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